Ms.Mathangi Sampath vs The Registrar Of Trade Marks
2023 Latest Caselaw 15480 Mad

Madras High Court

Ms.Mathangi Sampath vs The Registrar Of Trade Marks on 30 November, 2023

Author: Senthilkumar Ramamoorthy

Bench: Senthilkumar Ramamoorthy

                                  IN THE HIGH COURT OF JUDICATURE AT MADRAS

                                               DATED: 30.11.2023

                                                   CORAM

                        THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY

                                              (T)CMA(TM)/89/2023
                                             (OA/17/2020/TM/CHN)


                     Ms.Mathangi Sampath,
                     252/1, Adarsh Palm Meadows,
                     Varthur Road, Whitefield,
                     Bangalore - 560 066, Karnataka.                       ... Appellant
                                                       -vs-

                     1.The Registrar of Trade Marks,
                       The Trade Marks Registry,
                       IP Office Building,
                       GST Road, Guindy, Chennai 600 032.

                     2.The Senior Examiner of Trade Marks,
                       The Trade Marks Registry,
                       IP Office Building,
                       GST Road, Guindy, Chennai 600 032.               ... Respondents


                     PRAYER: Transfer Civil Miscellaneous Appeal (Trade Marks) filed

                     under Section 91 of the Trade Marks Act, 1999, praying to set aside

                     the impugned order of the respondent passed on 17.06.2019 and

                     statement of grounds of decision dated 27.09.2019 received by us in

                     1/6


https://www.mhc.tn.gov.in/judis
                     correspondence no.TLA/202/27/09/2019 against registration of the

                     Trade Mark with Application No.3795282 in Class 03 and thus render

                     justice.


                                       For Appellant    : Mr.R.Sathish Kumar
                                                          for M/s.Altacit Global

                                       For Respondents : Mr.A.R.Sakthivel, SPC

                                                        **********

                                                       JUDGMENT

The appellant challenges an order dated 17.06.2019 by which

Application No.3795282 for registration of the following device mark

was refused.

2. The above mentioned application was filed on 03.04.2018

https://www.mhc.tn.gov.in/judis asserting use since 06.03.2018 in relation to non-medicated cosmetics,

toiletry preparations and the like. By examination report dated

07.05.2018, the respondent raised an objection under Section 11(1) of

the Trade Marks Act, 1999 by citing two prior marks. The appellant

responded thereto on 26.06.2018 and distinguished its mark from the

cited marks. Eventually, by order dated 17.06.2019, the application

was rejected under Section 11. In the statement of grounds of

decision issued on 24.09.2019, the reason mentioned is the existence

of similar marks on the register in respect of similar goods.

3. At the hearing on 20.11.2023, after making submissions,

upon a suggestion from the Court, learned counsel for the appellant

took time to obtain instructions as to whether the appellant is

agreeable to modify the device mark in such a manner that the words

"TIMELESS" and "BEAUTY SECRETS" are written in a common font

of equal sizes beneath the pictorial device in the mark. Upon

obtaining instructions, learned counsel submits that the appellant is

agreeable to the said course of action.

https://www.mhc.tn.gov.in/judis

4. Mr.A.R.Sakthivel, learned SPC, justified the impugned order

on the ground that there would be a likelihood of confusion in view

of prior marks containing the element "TIMELESS".

5. Since the only objection was on the basis of prior marks

containing the element "TIMELESS", if the device mark of the

appellant is modified in the manner indicated above, the said mark

would be sufficiently different from the cited marks. Accordingly, by

directing the appellant to file the requisite application for

modification of the mark in the manner described above,

(T)CMA(TM)/89/2023 is disposed of by setting aside the impugned

order and directing that the application based on the modified mark

shall proceed for advertisement. It is made clear, however, that this

order will not be binding on opponents, if any. It is also clarified that

the appellant shall not claim exclusive use in respect of the individual

elements. There shall be no order as to costs.

https://www.mhc.tn.gov.in/judis 30.11.2023 rna Index : Yes / No Internet : Yes / No Neutral Citation: Yes / No

SENTHILKUMAR RAMAMOORTHY,J

rna

https://www.mhc.tn.gov.in/judis (T)CMA(TM)/89/2023 (OA/17/2020/TM/CHN)

30.11.2023

https://www.mhc.tn.gov.in/judis